Inequitable errors by the trademarks office: quashing a trademark registration

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For the first time, the Federal Court has granted an order by which a Canadian trademark registration was quashed and the matter was sent back to the Registrar of Trade-marks to consider a Statement of Opposition.

The statement had been filed with the registrar prior to the expiry of the advertisement period, but had not been considered by it (London Life Insurance Company v Registrar of Trademarks and Debt Freedom Canada Inc).

In Canada, the Registrar of Trade-marks has a legal duty to consider a Statement of Opposition filed against an advertised application. This duty consists of either allowing an opposition to proceed where the statement raises a substantial issue for decision, or rejecting the opposition where it does not.

In this case, a Statement of Opposition had been filed against an advertised trademark application, but despite the registrar not having rejected the opposition, the mark proceeded to registration. Upon learning of the registration of the mark, the potential opponent commenced an application for judicial review in respect of the registrar’s (i) inadvertent failure to exercise its duty to act fairly; and (ii) actions outside its jurisdiction.

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